Appeal No. 97-0260
Application 08/287,477
by the Examiner in the rejection of the claims on appeal. We
consider the various rejections in the same order as they
appear in the brief.
Rejection of claims 1 to 3, 8 to 12, 15, 16, 18 , 19 and 28
over Lewis and Janz
We treat the independent claim 1 first. With respect to
this claim, we have reviewed the Examiner’s position [answer,
pages 3 to 4 and 6] and Appellants’ corresponding arguments
[brief, pages 20 to 24]. Appellants argue that the
combination suggested by the Examiner is the result of
impermissible hindsight. Appellants provide little factual
basis or analysis for this position other than presenting a
conclusory statement [brief, pages 23 to 24]. We are of the
opinion that Appellants have the burden of presenting
arguments which persuade us to rule
that the suggested combination is unjustified. Here,
Appellants have not so done. In addition, we note that while
there must be some teaching, reason, suggestion, or motivation
to combine existing elements to produce the claimed device, it
is not necessary that the cited references or prior art
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